This CLE webinar will provide guidance to counsel for drafting university technology transfer and licensing agreements. The panel will discuss key clauses in the contracts and best practices for negotiating the agreements and avoiding pitfalls unique to the university context.

Description

University technology transfer and licensing present unique challenges that can trip up counsel not intimately involved in this practice area. Counsel advising private companies that are contemplating technology transfer deals with university faculty or employees need to understand the ins and outs of technology transfers and licenses in the university context.

While technology transfers present financial opportunities, they involve legal risk, such as potential IP infringement or the failure of related services to provide the expected value.

Private companies typically have different goals than the university when contracting technology transfers. Historically, university licensing programs focused on patent rights. However, universities are asserting their copyrights in software along with other IP rights in the technology.

Those involved in the negotiations must beware of potential conflicts of interest with faculty or university employees who, in addition to their university employment, may have a financial interest in the transfer or license.

By understanding the critical elements to include in agreements—and the common pitfalls involved in university technology transfers—counsel can effectively draft and negotiate an agreement in their clients’ best interests.

Listen as our authoritative panel of IP attorneys discusses the different types of technology transfer agreements, examining the pros and cons of each. The panel will also discuss key provisions to address in technology transfer negotiations and provide guidance for challenges that often arise in this context.

Mr. Solberg is Chair of the firm’s Intellectual Property Department. He has counseled a large number of startups,...
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Mr. Solberg is Chair of the firm’s Intellectual Property Department. He has counseled a large number of startups, universities, and venture firms in a wide variety of new or emerging technologies, addressing any and all IP needs for clients in this space, including patent prosecution, IP-related agreements, IP-related issues with respect to product development, overall IP strategy, and any other IP matters that might arise.

Mr. Staudt assists with a very diverse portfolio that includes the Agricultural Biotech and High Tech sectors. He...
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Mr. Staudt assists with a very diverse portfolio that includes the Agricultural Biotech and High Tech sectors. He identifies potential commercial partners, contacts potential licensees and evaluates the benefits of new technologies; assists in managing incoming leads and select technologies within the Wisconsin Alumni Research Foundation’s portfolio.

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$297

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